WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E. & J. Gallo Winery v. Oak Investment Group
Case No. D2000-1213
1. The Parties
Complainant is E. & J. Gallo Winery ("Complainant" or the "Winery") with a mailing address of 600 Yosemite Boulevard, P.O. Box 1130, Modesto, California 95353 USA.
Respondent is Oak Investment Group located at 221 Peachtree Road, Atlanta, Georgia 30309 USA.
2. The Domain Name and Registrar
The domain name at issue is "". The registrar is Easyspace Ltd. with an email address of "hostmaster@" and a website located at "www./support/".
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Complainant via email on September 13, 2000. On September 18, 2000, the Center received hardcopy of the Complaint. The Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.
On September 22, 2000, after sending a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent's name.
On September 22, 2000, the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On September 27, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
From October 13-17, 2000, the Center had communications with Respondent.
On October 18, 2000, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.
On October 26, 2000, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.
4. Factual Background
Complainant is a family-owned and operated business, with its headquarters in the Central California community of Modesto. The Winery was founded in 1933, by two brothers, Ernest Gallo and Julio Gallo.
The Winery is the largest wine-producing organization in the world. Although all of its bottling and shipping takes place in Modesto, it has large wineries in Sonoma, Fresno and Livingston, California. Three of these wineries are the three largest wineries in the world. The Winery presses about one third (1/3) of the total annual grape harvest of California. The wines bearing the GALLO trademarks are the largest selling brands of wine in the United States -- and probably in the world. In 1999, Gallo produced more wine than the entire country of Chile or the entire country of Australia.
The Gallo family�s attention to detail and quality has produced wines, which have been honored with hundreds of awards in competitions in the United States and around the world. In 1997, Gallo was named winery of the year by Wine and Spirits magazine. In 1998, the Winery was awarded "International Winery of the Year" at the 1998, Vinitaly International Wine Competition in Verona, Italy and "Winery of the Year" at the 1998, San Francisco International Wine Competition. In addition, the Winery has received other awards for its GALLO brands in the 1998, London International Wine and Spirits Competition, and 1998, Japan International Wine Challenge, as well as being awarded triple gold medals at the San Francisco International Wine Fair. Gallo was the first winery in the long history of this competition to achieve this distinction. In 1999, Gallo was named "Winery of the Century" at the Los Angeles County Fair. In that same year, Gallo won the Prix d�Excellence at the 1999, Challenge International du Vin and the Chardonnay Trophy at the International Wine Challenge in London.
The family commitment to quality is reflected by the use of their name in Gallo's flagship trademarks: GALLO and ERNEST & JULIO GALLO (the "GALLO Marks"). The GALLO Marks were used on the first shipment of wine sold by Gallo in 1933, and have been continuously used ever since that time. The GALLO Marks are used either "simpliciter" or in combination with other words such as GALLO Livingston Cellars, GALLO Classic Burgundy, ERNEST & JULIO GALLO, or GALLO OF SONOMA. Over 4 billion bottles of wine bearing the GALLO Marks have been sold throughout the world.
The GALLO Marks have been used in the United States since 1933, and have been used in 81 countries elsewhere in the world since the 1960's.
Currently, Gallo owns thirteen federal registrations for trademarks for wines that include the name �Gallo" in the United States, the earliest of which dates back to 1953.
Federal Registration No.
Date
444,756
March 24, 1953
668,475
October 14, 1958
778,837
September 25, 1964
891,339
May 19, 1970
64,331
July 17, 1973
1,813,967
December 28, 1993
1,815,078
January 4, 1994
1,828,503
March 29, 1994
1,845,837
July 19, 1994
1,911,682
August 15, 1995
1,914,257
August 22, 1995
2,119,298
December 9, 1997
2,231,215
March 9, 1999
The GALLO Marks are also registered in the individual states of the United States and in 120 other countries throughout the world.
Gallo is a privately owned (and not a public) company which is not required to and does not release its private confidential financial information. Accordingly, its sales figures are always stated in nine (9) liter case equivalents (or one (1) dozen 750 ml bottles). Since 1962, Gallo has sold over 4,000,000,000 bottles of wine bearing the GALLO Marks throughout the world. Worldwide sales figures for wines bearing the GALLO Marks in recent years are as shown below:
Totals
Year
Mark
Total
EJG
GALLO
(x1000)
(x1000)
(x1000)
1982
22,047
19,761
2,286
1983
22,782
20,298
2,484
1984
21,888
19,439
2,449
1985
17,783
15,479
2,304
1986
19,490
16,355
3,135
1987
19,263
15,614
3,649
1988
19,021
17,320
1,707
1989
19,979
16,030
3,949
1990
19,925
14,407
5,519
1991
19,369
13,297
6,072
1992
32,230
12,752
19,478
1993
30,981
11,929
19,052
1994
22,427
9,889
2,538
1995
19,850
11,260
8,590
1996
21,753
10,415
11,339
1997
19,230
9,203
10,027
1998
20,265
9,144
11,121
1999
13,879
2,741
11,138
2000*
6,037
1,168
4,869
*Through June
Gallo has been exporting wines bearing the GALLO Marks to commercial and military markets since the early 1960's. Sales figures of such goods, stated in nine (9) liter case equivalents (or one (1) dozen 750 ml bottles), are for the years shown as follows:
Year
Total GALLO Marks
1979
295,000
1980
396,000
1981
425,000
1982
323,000
1983
340,000
1984
314,000
1985
284,000
1986
265,000
1987
348,000
1988
708,000
1989
871,000
1990
868,000
1991
1,296,000
1992
1,517,000
1993
1,639,000
1994
1,876,000
1995
2,205,000
1996
2,827,062
1997
2,494,919
1998
3,582,036
1999
4,937,730
2000
2,661,909*
*through June
Gallo has always been the leader industry in advertising and promotion. During the 1934 - 1994 period, it spent over $500 million (U.S.) advertising and promoting GALLO brand wines throughout the world. The majority of this (79%) was spent during the 1977 - 1994 period, which coincides with the major expansion of its international business. These efforts include: television advertising, print media advertising, point-of-sale materials (floor displays, price cards, posters, shelf-talkers), wine tasting, and other promotional activities.
Advertising and promotional expenditures in the United States alone (in U.S. dollars) for the years shown are as follows:
United States
1989
-
$27,533,000
1990
-
$25,511,000
1991
-
$24,818,000
1992
-
$22,056,000
1993
-
$18,120,000
1994
-
$13,929,000
1995
-
$ 9,800,000
1996
-
$ 7,060,000
1997
-
$ 7,650,000
1998
-
$ 6,723,299
1999
-
$12,467,498
These figures do not include promotions sponsored by distributors or retailers.
The GALLO Marks have been the subject of three (3) significant judicial decisions in the United States. In all three cases, the courts recognized that the GALLO Marks are extremely strong and entitled to the broadest degree of protection.
(1) In Gallo Winery v. Gallo Cattle Company, 12 U.S.P.Q.2d 1657 (E.D. Cal. 1989), the owners of the E. & J. Gallo Winery sued their younger brother who was using a GALLO trademark on cheeses. The Court concluded that: "The GALLO brand is universally known both nationally and in California, and has become an extraordinarily strong and distinctive mark...." (p. 1667). This holding was affirmed by the United States Court of Appeals for the Ninth Circuit. 967 F.2d 1280 (9th Cir. 1992). The court enjoined the use of GALLO on cheeses.
(2) In Gallo Winery v. Consorzio del Gallo Nero, 782 F. Supp. 457 (N.D. Cal. 1991), the Court agreed with the findings in the Gallo Cattle Company case. It further found that the GALLO Marks had "virtually universal recognition," that they had "virtually unparalleled strength," and that they were a "mighty fortress" of a trademark in the United States. The court enjoined the use of GALLO NERO on wines.
(3) In Gallo Winery v. Pasatiempos Gallo, S.A., 905 F. Supp. 1403 (E.D.Cal. 1994), the court enjoined a Mexican company from selling playing cards, board games, confetti, party streamers and poker chips. The court found that over 60 years of extensive use and advertising had made Gallo's famous marks "extraordinarily strong and distinctive," and that the defendants' use of GALLO would destroy the distinctiveness and commercial value of the marks.
The fame of the GALLO Marks has also been recognized by courts outside of the United States. In Gallo Winery v. Mighty Corporation, No. 93-850, the Regional Trial Court of Makati City Branch 57 (Philippines) issued a decision in December 1998, ordering Mighty Corporation to cease and desist from using E. & J. Gallo Winery�s registered and well-known GALLO trademark and from committing other acts of unfair competition against the Gallo Winery by manufacturing and selling their cigarettes in the domestic or export markets under the GALLO trademark. In so ordering, the Court held that the GALLO marks were "internationally well known" and entitled to broad protection under Article 6 bis of the Paris Convention and Article 16 of the TRIPS agreement.
5. Parties� Contentions
A. Complainant contends that it has a registered trademark and service mark in the GALLO Marks. Complainant further contends that the Domain Name is identical with and confusingly similar to the GALLO Marks service mark pursuant to the Policy paragraph 4(a)(i).
Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).
B. Respondent has not contested Complainant�s assertion that it has registered the GALLO Marks or that the Domain Name is confusingly similar to the GALLO Marks.
Respondent has not contested Complaint�s assertion that Respondent has no rights or legitimate interest in the Domain Name.
Respondent has not contested Complaint�s assertion that Respondent has registered and used the Domain Name in bad faith.
6. Discussion and Findings
Even though Respondent has failed to file a Response or to contest the allegations of Complainant, the Sole Panelist will review Complainant�s allegations to establish whether Complainant has established the necessary elements of its claim.
Identity or Confusing Similarity
Complainant contends that it has registered trademarks in the GALLO Marks. Complainant further contends that the Domain Name is identical with and confusingly similar to the GALLO Marks pursuant to the Policy paragraph 4(a)(i).
The GALLO Marks each use the phrase "gallo" either by itself or in conjunction with other words related to the wine industry. The Domain Name uses the phrase "gallo" together with "wine." This combination creates the impression that the Domain Name is related to Complainant.
Therefore, the Panel finds that the Domain Name is confusingly similar to the GALLO Marks owned by Complainant pursuant to the Policy paragraph 4(a)(i).
Rights or Legitimate Interest
Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Respondent has no relationship with or permission from Complainant for the use of the GALLO Marks.
The Policy paragraph 4(c) allows three non-exclusive methods for Respondent to demonstrate that it has rights or a legitimate interest in the Domain Name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent has offered no proof to support any of the three methods by which it may demonstrate that Respondent has rights or a legitimate interest in the Domain Name. Respondent offers insufficient evidence of the applicability of any of the criteria in the Policy paragraph 4(c).
Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Bad Faith
Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four non-exclusive criteria for Complainant to show bad faith registration and use of domain names:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Complainant alleges that Jonathon Honaker, Respondent�s contact person in the WHOIS database, is not in the wine business. When contacted by Complainant�s undercover investigator about his ownership of the name, Mr. Honaker offered to sell the name to the investigator. This fact supports a finding that Respondent�s primary purpose is to sell the Domain Name to Complainant or a competitor. Therefore, the Sole Panelist finds that the elements of the Policy paragraph 4(b)(i) have been met.
The four criteria established by the Policy paragraph 4(b) are non-exclusive. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.
One such factor is that Respondent has made no use of the Domain Name. Such failure to use a domain name in a bona fide manner has been found to constitute bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000); Leland Stanford Junior Univ. v. Zedlar Transcription & Translation, FA 0006000094970 (NAF July 11, 2000); Revlon Consumer Prods. Corp. v. Yosef, D2000-0468 (WIPO July 27, 2000,) (citing cases where panel found inaction constitutes bad faith).
When Respondent registered the Domain Name "" it knew or should have known of the existence of the E &J Gallo Winery and the famous GALLO Marks. See Expedia, Inc. v. European Travel Network, D2000-0137 (WIPO Apr. 18, 2000). In fact, the principals of Respondent company themselves have probably consumed wines produced by Gallo. These wines have been sold for decades in Atlanta, Georgia, where Respondent is located. See Document Technologies v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000,) (Respondent�s knowledge of complainant�s mark at the time of registration of the domain name suggests bad faith).
On August 15, 2000, counsel for Complainant sent a letter to Respondent informing it that GALLO was a federally registered trademark of Complainant, and demanding that Respondent permanently cease all use of the "" domain name. Respondent never responded to said letter. Failure to respond to a complainant�s efforts to make contact provides "strong support for a determination of �bad faith� registration and use." Encyclopaedia Britannica v. Zucarini, D2000-0330 (WIPO June 7, 2000).
Complainant�s allegation that Respondent offered to sell his ownership of the Domain Name was discussed above. The offering for sale of a domain name, even to a third party, supports bad faith. See Policy, Paragraph 4(b); Sporty�s Farm L.L.C. v. Sportsman�s Market, Inc., 202 F.3d 489 (2d Cir. 2000); Porsche Cars North America, Inc. v. Spencer, 55 U.S.P.Q.2d 1027 (E.D. Cal. 2000); Morrison & Foerster LLP v. Wick, 94 F. Supp.2d 1125 (D. Colo. 2000).
The Sole Panelist finds that Complainant has shown sufficient facts, in addition to the elements of the Policy paragraph 4(b)(i), to support a finding that the Domain Name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).
7. Decision
The Panel concludes (a) that the Domain Name "" is confusingly similar to the GALLO Marks, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to E. & J. Gallo Winery.
Richard W. Page
Sole Panelist
Dated: November 12, 2000
Full & Egal Universal Law Academy